Effective May 4, 2011, the U.S. Patent and Trademark Office (USPTO) will make available a fee-based prioritized examination process called "Track I." The new examination process will allow patent applicants to expedite initial examination of an original utility or plant application1 filed under 35 U.S.C. 111(a), with the intended goal of reaching a final disposition within 12 months of being granted prioritized status.2

The "Track I" Process

To begin the process, a new application must be filed with a request for prioritized examination, on or after the effective implementation date, using the USPTO's electronic filing system (EFS-Web). The application must be complete (i.e., no missing parts), contain no more than four (4) independent and thirty (30) total claims, and be accompanied by a $4,000 fee payment (in addition to the standard filing, claim count and application size fees).

Once an application is granted prioritized status, it is placed on an examiner’s special docket until a final disposition is reached. A final disposition includes the following: (i) mailing of a Notice of Allowance; (ii) mailing of a final Office Action; (iii) filing of a Notice of Appeal; (iv) declaration of an interference by the Board of Patent Appeals and Interferences; (v) filing of a request for continued examination; or (vi) abandonment of the application.

After a final disposition is reached, prioritized examination will conclude and prosecution of the application (if still pending) would continue under the normal examination track.

Unlike other accelerated examination processes offered by the USPTO, the Track I process does not require a pre-examination prior art search or corresponding analysis to be performed.

Points to Consider Before You File

Applicants should be aware that the Track I process not only accelerates examination of an application, but it also accelerates the cost of prosecuting the application in the first 12 months of its pendency. Therefore, it is important for applicants interested in the Track I process to consider:

  • whether the invention sought for patent is directed to a key product; and
  • whether earlier examination would provide any strategic advantage or value to the underlying business.